Should Facebook Stop Using The Brand Name PAPER?

New York start-up, FiftyThree, Inc. (“FiftyThree”) filed a trademark application with the United States Patent & Trademark Office (USPTO) on May 11, 2012 for the mark PAPER BY FIFTYTHREE. The trademark application sought protection for computer application software for smart phones and tablets, namely software for use in writing on smart phones and tablets with a stylus or finger. Essentially, the product permits you to draw, sketch and create designs on mobile devices. The company alleged that it first used the trademark PAPER BY FIFTYTHREE in commerce on March 29, 2012. The trademark was issued a Certificate of Registration on December 31, 2013.

On January 30, 2014, Facebook announced it was launching an app called Paper. Facebook’s standalone app is a content reader and does not have a drawing element. FiftyThree requested that Facebook change the name of its app and although, it has been reported that Facebook apologized for not contacting FiftyThree sooner with regard to the launch of its app PAPER, it has not agreed to change the name of its news reader app.

On the same day that Facebook announced its new app called Paper, FiftyThree filed a trademark application for the mark PAPER with the USPTO. The same goods included in the first trademark application (for PAPER BY FIFTYTHREE) were identified here , but FiftyThree expanded the goods description to also include computer application software and services for creating, editing, and compiling content to share with others via a social network, as well as computer hardware and software programs and services for multimedia applications. I believe that FiftyThree filed this second trademark application to reinforce its claim to the mark PAPER BY FIFTYTHREE, but also to test its rights to “Paper” alone. In addition, I think it was attempting to assert pressure on Facebook to change the name of its app. Since this application was filed less than 3 months ago, it has not yet been reviewed by an Examiner at the USPTO yet.

It will be interesting to watch this matter unfold. Will FiftyThree file a trademark infringement action against Facebook? Will Facebook file a Notice of Opposition against FiftyThree’s trademark application for PAPER once it is published? It may be difficult for either company to establish priority in the mark PAPER because many third parties use it as part of their trademark for computer software applications. In fact, there are approximately 50 apps that are using Paper in their name as part of their mark.

Even more importantly, the company Studio Contradictory released an app called PAPER in 2011 that has a drawing element designed for both the IPAD and IPHONE devices. In addition, the app company Misoft released an app in September 2012 under the name PAPER as well. It appears that both of these companies could assert “senior” common law rights to the mark. See our blog post entitled Trademark Common Law Rights Can Prevail Based On Priority Against Registered Rights, where common law rights are discussed in more detail.

Another possible obstacle FiftyThree may have to overcome is the argument that the trademark PAPER is descriptive for the goods identified in the trademark application. If a mark is descriptive of an ingredient, characteristic, function, quality, purpose or use it will be refused on the Principal Register, unless it can show secondary meaning. See TMEP §1209.01(b). See also our web page entitled Simple Trademark Rules and Considerations where we discuss how we counsel our clients against selecting descriptive marks because they are weak marks that are difficult to police in the marketplace and may be refused on the Principal Register unless the applicant can show secondary meaning.

FiftyThree appears to be appealing to the public. The company expressed its discontent online. It shared its story with the public for a reason. Public perception and social media can be used as tools to apply pressure on a large company and threaten them with negative press. If a company is appearing to be a “trademark bully” there could be a negative backlash and consumer disfavor. In addition, FiftyThree is receiving exposure and attention that it would not have received if the company launching the news reader app called PAPER was not Facebook. In my opinion, FiftyThree has already benefitted from Facebook’s adoption of the mark PAPER. I am confident that FiftyThree had strategic reasons for filing the second trademark application for PAPER and with time, we will see if its calculated risks were worth it in the end. If you find yourself wondering if a competitor’s brand or mark is infringing on a trademark you have adopted, contact one of our New York trademark attorneys for a courtesy consultation.